Ex Parte Tubinis

Patent Trial and Appeal Board

Jun 5, 2013

10162232 (P.T.A.B. Jun. 5, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/162,232 06/03/2002 Mark A. Tubinis 129250-002299/US 3466
32498 7590 06/05/2013
CAPITOL PATENT & TRADEMARK LAW FIRM, PLLC
P.O. BOX 1995
VIENNA, VA 22183
EXAMINER
AUGUSTIN, EVENS J
ART UNIT PAPER NUMBER
3685
MAIL DATE DELIVERY MODE
06/05/2013 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE PATENT TRIAL AND APPEAL BOARD 4
___________ 5
6
Ex parte MARK A. TUBINIS 7
___________ 8
9
Appeal 2011-004549 10
Application 10/162,232 11
Technology Center 3600 12
___________ 13
14
15
Before ANTON W. FETTING, BIBHU R. MOHANTY, and 16
MEREDITH C. PETRAVICK, Administrative Patent Judges. 17
FETTING, Administrative Patent Judge.18
19
DECISION ON APPEAL 20
21
Appeal 2011-004549
Application 10/162,232

2

STATEMENT OF THE CASE1 1
Mark A. Tubinis (Appellant) seeks review under 35 U.S.C. § 134 of a 2
final rejection of claims 1-38 and 50-66, which along with claims 39-49 and 3
67 withdrawn from consideration, are the only claims pending in the 4
application on appeal. We have jurisdiction over the appeal pursuant to 5
35 U.S.C. § 6(b). 6
The Appellant invented a way of notifying a subscriber of a 7
communications network that a threshold amount of a multimedia service 8
provided on the network has been consumed while the service is being 9
provided and enabling the subscriber an opportunity to add value to an 10
account balance for the multimedia service (i.e., "top-up") while the service 11
is being provided, thereby extending the duration that the service 12
(Specification 1:25-30). 13
An understanding of the invention can be derived from a reading of 14
exemplary claims 1 and 50, reproduced below [bracketed matter and some 15
paragraphing added]. 16
1. A method 17
of providing a session between a user terminal used by a 18
subscriber and a server of a communications network 19
providing a service to the subscriber, 20
wherein 21

1 Our decision will make reference to the Appellants’ Appeal Brief
(hereinafter “App. Br.,” filed July 21, 2010) and Reply Brief (hereinafter
“Reply Br.,” filed December 13, 2010), and the Examiner’s Answer
(hereinafter “Ans.,” mailed October 15, 2010).
Appeal 2011-004549
Application 10/162,232

3

the session involves the exchange of at least one of 1
data content and video content, 2
and 3
the subscriber has a [sic, an] account balance for 4
the service, 5
the method comprising acts of: 6
(A) converting the account balance for voice services 7
to prepaid account for the service of 8
[A1] providing multimedia data, 9
[A2] obtaining a threshold from the converted 10
prepaid account, 11
and 12
[A3] maintaining a threshold for the service during 13
the session, 14
the threshold corresponding to the account 15
balance; 16
(B) metering an amount of the service used during the session; 17
(C) determining that the threshold has been reached; 18
(D) notifying the subscriber 19
through the user terminal 20
that the threshold has been reached; 21
and 22
(E) enabling the subscriber an opportunity 23
to add to the account balance. 24
25
50. A method 26
of notifying a subscriber 27
that a threshold amount of service corresponding 28
to an account balance for a service has been reached 29
during a session 30
Appeal 2011-004549
Application 10/162,232

4

between a user terminal 1
used by a subscriber 2
and 3
a server of a communications network providing 4
the service to the subscriber, 5
wherein the session involves the exchange 6
in a first format 7
of at least one of video content and audio content, 8
the method comprising acts of: 9
(A) notifying the subscriber 10
that the threshold has been reached 11
as part of the existing session 12
using the at least one of video content and audio 13
content formatted in the first format. 14
App. Br. 10, 20, Claims App’x. 15
The Examiner relies upon the following prior art: 16
Katz US 6,424,706 Jul. 23, 2002
Wang
Price
Tuomela
US 2002/0131395 A1
US 2002/0143973 A1
US 2001/0031633 A1
Sep. 19, 2002
Oct. 3, 2002
Oct. 18, 2001
Claims 1-7, 9-28, 34-38, and 50-66 stand rejected under 35 U.S.C. § 17
103(a) as unpatentable over Wang, Katz, and Price. 18
Claims 29-33 stand rejected under 35 U.S.C. § 103(a) as unpatentable 19
over Wang, Katz, Price, and Tuomela. 20
ISSUES 21
The issue of obviousness turns on whether Katz discloses converting the 22
purpose of funds held on account. 23
Appeal 2011-004549
Application 10/162,232

5

FACTS PERTINENT TO THE ISSUES 1
The following enumerated Findings of Fact (FF) are believed to be 2
supported by a preponderance of the evidence. 3
Facts Related to Claim Construction 4
01. The disclosure contains no lexicographic definition of “convert.” 5
Facts Related to the Prior Art 6
Wang 7
02. Wang is directed to a telecommunications system that implements 8
a “Session Initiation Protocol” in a General Packet Radio System 9
(GPRS). (Wang, para. [0006]). 10
03. Wang discloses notification to a user if an account balance is too 11
low. (Wang, para. [0083], [0085]). 12
Katz 13
04. Katz is directed to methods for purchasing, storing, exchanging, 14
and converting stored value accounts such as pre-paid 15
telecommunications services. (Katz, col. 1, ll. 8-14). 16
05. Katz discloses converting the intended use of an account balance 17
of “prepaid unit-minutes” to permit redemption in currency. 18
(Katz, col. 19, ll. 47-51). 19
20
ANALYSIS 21
Claims 1-7, 9-28, 34-38, and 59-66 rejected under 35 U.S.C. § 103(a) as 22
unpatentable over Wang, Katz, and Price. 23
Appeal 2011-004549
Application 10/162,232

6

The Appellant argues independent claims 1, 37, and 38 as a group. App. 1
Br. 6, 7. We select independent claim 1 as representative. See 37 C.F.R. § 2
41.37(c)(1)(vii). 3
We are not persuaded by the Appellants’ argument that Katz does not 4
disclose the feature of converting an account balance, used to provide voice 5
services, to a prepaid account used to provide multimedia data, because Katz 6
instead discloses converting into an amount used to purchase goods or 7
unrelated services. App. Br. 7. Rep. Br. 2. 8
The claim recites the step of “converting the account balance for voice 9
services to prepaid account for the service of providing multimedia data.” 10
No implementation is recited for the manner in which the “converting” takes 11
place, and no definition of “account balance” is present in the Specification. 12
(FF 01). We construe “converting” as changing the targeted use of the funds 13
from one purpose to another, and find the claim does not alter the steps 14
depending on the particular intended use of the funds on account. The 15
converting therefore does not necessarily require any structural changes, but 16
may merely be a non-functional change in content that documents the 17
purpose. We find Katz discloses converting an account balance, intended 18
for telecommunications use, to being available for redemption into currency, 19
which therefore meets the claim language. (FF 05). 20
We are not persuaded by the Appellants’ argument that the combination 21
of Wang and Katz is in error because “any attempt to combine Wang and 22
Katz would necessarily require Wang to change its principle of operation to 23
become compatible with Katz' conversion of unit-minutes to a monetary 24
value [which, in turn,]. . . . would destroy Wang's principle of operation.” 25
Appeal 2011-004549
Application 10/162,232

7

App. Br. 8-9, Rep. Br. 4. The Examiner relied on Katz only for its 1
disclosure of converting an account balance to another intended use of 2
redeeming the balance for currency, and not for the bodily incorporation of 3
its entire disclosure. Ans. 4. “[I]t is not necessary that the inventions of the 4
references be physically combinable to render obvious the invention under 5
review.” In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983). 6
We therefore affirm the rejection under 35 U.S.C. § 103(a) of claims 1, 7
37, and 38, as well as dependent claims 2-7, 9-36, and 59-66 that were not 8
separately argued. 9
Claims 50-58 rejected under 35 U.S.C. § 103(a) as unpatentable over Wang, 10
Katz, and Price. 11
In addition to the arguments presented above, the Appellant separately 12
argues claims 50, 54, and 55 together. App. Br. 7, Rep. Br. 2. Independent 13
claim 50 recites a method comprising the step of “notifying the subscriber.” 14
Independent claims 54 and 55 recite essentially identical limitations. In all 15
three claims, however, the content of the notification is non-functional 16
descriptive material undeserving patentable weight, because the content does 17
not alter the method, system, or medium, to notify the subscriber (about a 18
threshold). See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004). 19
We are not persuaded by the Appellants’ arguments that Wang appears 20
to disclose a separate web page which is recharged in a separate, not an 21
existing, session (App. Br. 8, Rep. Br. 3), and that Wang does not appear to 22
disclose or suggest a notification accomplished using the same format for 23
video and audio content (App. Br. 8, Rep. Br. 3). Both of these arguments 24
are directed to the content of the notification, and therefore have no bearing 25
Appeal 2011-004549
Application 10/162,232

8

on the patentability of the claim. We therefore affirm the rejection under 35 1
U.S.C. § 103(a) of claims 50, 54, and 55, as well as dependent claims 51-53 2
and 56-58 that were not separately argued. 3
Claims 29-33 rejected under 35 U.S.C. § 103(a) as unpatentable over Wang, 4
Katz, Price, and Tuomela. 5
We affirm the rejection of these claims because they were not separately 6
argued. App. Br. 9, Rep. Br. 4. 7
CONCLUSIONS OF LAW 8
The rejection of claims 1-7, 9-28, 34-38, and 50-66 under 35 U.S.C. § 9
103(a) as unpatentable over Wang, Katz, and Price is proper. 10
The rejection of claims 29-33 under 35 U.S.C. § 103(a) as unpatentable 11
over Wang, Katz, Price, and Tuomela is proper. 12
13
DECISION 14
The rejection of claims 1-7, 9-38 and 50-66 is affirmed. 15
No time period for taking any subsequent action in connection with this 16
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 17
§ 1.136(a)(1)(iv) (2011). 18
19
AFFIRMED 20
21
22
rvb 23
24